Anchovy News, May 2021

Hogan Lovells
Contact

Hogan Lovells

This is the May edition of Anchovy News. Here you will find articles concerning ICANN, the domain name industry and the recuperation of domain names across the globe. In this issue we cover:

DOMAIN NAME INDUSTRY NEWS

  • Launch of .SBS
  • EURid Report provides quarterly overview of .EU domain names
  • French government calls for expressions of interest for running French Registry

DOMAIN NAME RECUPERATION NEWS

  • Trading in domain names is not per se bad faith
  • Trademark owner is no superhero under the UDRP
  • Legitimate interests behind passive holding

Newsletter sections:

  • Domain name industry news
  • Domain name recuperation news

For earlier Anchovy News publications, please visit our Domain Names practice page.

Domain name industry news

Launch of .SBS

ShortDot, the Registry operating the new generic Top Level Domains (gTLDs) .ICU, .BOND, .CYOU and .CFD, has just launched its latest acquisition, .SBS.

Originally, .SBS was a “dotBrand” new gTLD owned by the Australian public service broadcaster SBS (short for “Special Broadcasting Service”). “DotBrands” are new gTLDs owned by branded companies for their own use. However in the end SBS did not use its gTLD and thus submitted a Termination Notice to ICANN (the Internet Corporation for Assigned Names and Numbers) in April of last year. The Registry ShortDot then acquired it and is now in the process of launching it, this time as an open gTLD.

In an effort to raise interest in its new gTLD, the Registry has sought to give it a different meaning and is thus rebranding it as being short for “Side by Side”. ShortDot had done something similar with another recent acquisition, .CFD, which originally stood for “Contracts For Difference” and was rebranded as “Clothing Fashion Design”.

COO. Kevin Kopas stated: ".SBS communicates the drive a business has for economic growth coupled with the commitment to supporting and uplifting communities side by side. .SBS establishes a strong connection with social enterprises, non-profit organizations, community groups, and activists alike."

The launch of .SBS has recently started according to the following schedule:

  • Sunrise: 6 May - 7 June 2021

During this period, trademark holders who have registered their trademark(s) with the Trade Mark ClearingHouse (TMCH) can apply for the corresponding .SBS domain name(s).

  • Early Access Period (EAP): 8-15 June 2021

The EAP will be open to the general public on a first come, first served basis, but during this phase domain names will be available at higher prices than normal. Prices will decrease day by day, thus a domain name will be much cheaper on the seventh day of the EAP than on the first day.

  • General Availability: 15 June 2021

Domain names will be available for everybody on a first come, first served basis at the standard price from 15 June onwards.

There are no registration requirements thus anyone can apply for a .SBS domain name.

Similarly to .FORUM which launched last November (see our Anchovy News November/December issue), the price may deter many trademark holders, as the Sunrise application fee is in the region of $1,000. Registration costs during General Availability will, however, be standard.

For more information on the registration of .SBS domain names, please contact David Taylor or Jane Seager

 

EURid Report provides quarterly overview of .EU domain names

EURid, the Registry responsible for running the .EU country code Top Level Domain (ccTLD), recently published its Q1 2021 Progress Report which included its quarterly statistics for .EU.

At the end of Q1 2021, EURid recorded a total of 3,681,337 domain name registrations, which represented a net increase of 186,488 registrations. EURid also noted that registrations by registrants based in Ireland had the highest rate of growth at 9.3% during Q1 2021, followed by Latvia and Malta with registration growth rates of 4.4% and 3.8%, respectively. During Q1 2021 EURid also recorded 9,267 multi-year domain name registrations (it is possible to register and renew .EU domain names for a period of between 1 to 10 years).

Germany was the country with the highest number of .EU domain names recorded, with some 995,761 domain names, followed by the Netherlands with 472,868 domain names and France with 309,653 domain names. In addition, EURid recorded an average domain name renewal rate of 79.3%, which was slightly down on the 81.7% renewal rate recorded during Q4 2020. This is possibly due to the non-renewal of .EU domain names by registrants in the UK as a result of Brexit.

There were 26 Domain Name Disputes filed in Q1 2021, with disputes filed under the Alternative Dispute Resolution procedure with the Czech Arbitration Court (CAC) and WIPO Center.

To visit EURid’s website, please click here.

 

French government calls for expressions of interest for running French Registry

The French government has called for expressions of interest from parties interested in running the French domain name Registry when its current five-year contract runs out next year. The Registry has been run by L’Association française pour le nommage Internet en coopération (Afnic) since 1997.

Afnic oversees the .FR (France), .RE (Reunion), .TF (French Southern and Antarctic Lands), .YT (Mayotte), .PM (Saint Pierre and Miquelon) and .WF (Wallis and Futuna) country code Top Level Domains (ccTLDs). The Registry’s contract comes up for renewal every five years with the most recent contract being entered into in April 2017.

The activities of the Registry have been overseen by the French government since 2007 by virtue of Article L.45, L. 45-1 to 6 and R. 20-44-34 to 44 of the code des postes et des communications électroniques (Post and Electronic Communications Code).

Afnic directs 90 % of its profits from running the Registry into the Fondation Afnic pour la solidarité numérique (the Afnic Foundation for Digital Solidarity). The stated aim of the Foundation is to “support the development of a solidarity-based internet, to provide training and increase awareness as to its use by supporting local digital solidarity initiatives and research projects in this area.”

Afnic also provides technical services for the Registries of several new and legacy generic Top Level Domains (gTLDs), including .MUSEUM, .ALSACE (for the region of Alsace), .BZH (for the region of Brittany), .PARIS (for the city of Paris) and .CORSICA (for Corsica).

Responses to the expression of interest must be submitted by 30 June 2021. It will be interesting to see whether any other candidates throw their hats into the ring.

 

Domain name recuperation news

Trading in domain names is not per se bad faith

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a three-member Panel refused to order the transfer of a Domain Name because the Complainant failed to demonstrate that it was registered or used in bad faith.

The Complainant was Virutex Ilko S.A., company based in Chile manufacturing and selling kitchen products and household cleaning products.

The Respondent was Michael Bilde from the United States, an individual operating a naming consultancy and offering domain names for sale.

The Domain Name ilko.com was registered in 2016. It redirected to a website displaying other domain names available for purchase and also indicating that the Domain Name was no longer for sale.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under paragraph 4(a):

(i) the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Before proceeding with the assessment of the three limbs of the Policy, the Panel focused on the language issue. In the present case, the Complaint had been initially submitted in Spanish. However, the Panel found English to be the appropriate language for the proceedings, given that that was the language of the registration agreement. In addition, the Complainant spontaneously submitted an English version of the Complaint and didn’t provide any evidence of the Respondent’s ability to communicate in Spanish.

When it came to substantive matters and more specifically to the first limb of the UDRP, the Complainant contended that it had trademark rights in ILKO registered in many countries in the world including Chile, Mexico, Peru and Canada, some of which dated from as early as 1988. The Complainant argued that the Domain Name was identical to its trademark. In addition, the Complainant also submitted that it operated its main website using cocinailko.cl since 2019. The Respondent did not argue with these points and did not deny the existence of the Complainant’s rights and the similarity between such rights and the Domain Name.

The Panel noted that the requirements of the UDRP were conjunctive and so the failure to prove any one of them would result in a denial. As such, in view of its findings under the third limb of the Policy, the Panel did not feel the need to comment on the first and second elements of the Policy in the present case.

The Complainant claimed that the Respondent didn’t own any rights in the term ILKO and intended to profit from the sale of the Domain Name, having offered it for sale for a high price of USD 21,595. The Respondent submitted that in Eastern Europe “Ilko” corresponded to a common first name and second name and various businesses and enterprises were often named or abbreviated using this term. Therefore, it had inherent market value for the Respondent, who was in the business of domain name trading. The Respondent added that he had registered the Domain Name upon its abandonment by a person named “Ilko” in 2016. The Respondent indicated that he was unaware of the Complainant’s existence prior to the proceeding, and underlined that he never intended to target the Complainant.

The Panel found that the Complainant had failed to provide evidence that the Domain Name was registered “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant” in accordance with paragraph 4(b)(i) of the Policy. Furthermore, the Panel concluded that the Complainant had not demonstrated that the Respondent had ever used the Domain Name to target the Complainant. Finally, the Panel considered that there was no reason why the Respondent would have been aware of the Complainant’s trademark.

In light of the above, the Panel made a finding that the Complainant had failed to demonstrate the requirements prescribed by the third limb of the Policy and so the Panel refused the transfer of the Domain Name.

The Panel also considered whether a finding of reverse domain name hijacking ("RDNH") was appropriate. RDNH is defined in paragraph 1 of the UDRP Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". First, the Panel noted that the question of abuse of the proceedings could be addressed by the Panel even if the Respondent had not requested such a finding. In this case, the Panel considered that the Complainant should have understood that trafficking in domain names was not per se in bad faith and therefore the Panel found that there were sufficient grounds for a finding of RDNH. However, the Panel decided to use its discretion not to make such finding, and instead only issued a warning to the Complainant’s counsel.

This decision highlights once again the intrinsic value that short domain names may have, such value being determined not by a UDRP panel but by supply and demand in the marketplace. In fact, the sale of three or four-letter domain names is legitimate in the absence of any evidence of cybersquatting.

This decision also serves as a reminder that UDRP proceedings are usually conducted in the language of the registration agreement in accordance with paragraph 11(a) of the UDRP Rules, which reads as follows:

Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

In reality Panels frequently use their discretion to allow complaints to be submitted in a different language to that of the registration agreement, depending on factors such as the nationality of the parties, the language previously used by the parties to communicate with each other, the nature of the domain name, the pointing of the domain name or previous proceedings involving the same respondent.

The decision is available here.

 

Trademark owner is no superhero under the UDRP

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of a Domain Name: it found that the Complainant had failed to show any evidence of bad faith and had therefore engaged in Reverse Domain Name Hijacking (RDNH).

The Complainant was Tirth Agro Technology Private Limited, an India-based company operating a business related to agricultural machines. It held numerous trademarks for "SHAKTIMAN" around the world, including in India, Israel, the United States and the European Union. According to the Complainant, the trademarks were internationally used since 1961 and had therefore acquired trans-border reputation, goodwill and fame.

The Respondent was Anuj Bhargava from Anroh Global Services Pvt. Ltd., an individual based in India. No further information was provided.

The disputed Domain Name, shaktiman.com, was registered on 13 January 2000 and was not resolving.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under paragraph 4(a):

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under the first requirement, the Panel recognised that the disputed Domain Name was identical to the Complainant’s “SHAKTIMAN” trademarks. Therefore, without having to consider the timeline of the trademark applications, the Panel found that the Complainant satisfied paragraph 4(a)(i) of the UDRP.

The Panel held that the second requirement of the Policy did not need to be addressed in light of the third requirement, whereby the Panel concluded that the Respondent had not registered and used the disputed Domain Name in bad faith.

First, for bad faith to be established, the Complainant needed to demonstrate that the Respondent should have been aware of the Complainant’s trademarks at the time the disputed Domain Name was registered. Therefore timing was key: evidence of the fame of the trademarks must predate the registration of the Domain Name. In this regard, the Panel held that the evidence put forward by the Complainant was insufficient.

The Complainant only evidenced proof of use of its trademarks after the registration of the disputed Domain Name, not before. In addition, the only trademark dated before the registration date was in the name of another company, without any explanation as to how this company was related to the Complainant. Similarly, the Complainant did not explain why the alleged date of first use of 30 June 1999 on the Complainant’s trademark certificates was nearly one year before its incorporation on 26 July 2000. Taking into account all the evidence submitted by both parties, the Panel found that it did not support a finding that the Respondent ought to have known of the Complainant’s trademark when the Domain Name was registered. It was therefore reasonable to infer that it was unlikely that the Respondent registered the disputed Domain Name because of the existence of the Complainant’s trademark.

The Panel noted that the term “Shaktiman” was a generic word in the Hindi language, used in numerous fields, in particular in a popular Hindi television show featuring a superhero under the name of “Shaktiman”. When it comes to dictionary words, widely used as trademarks, it is important for complainants to show, by direct evidence, that their trademarks are being targeted. In this case, the Complainant had not done this.

Finally, the Panel noted that the Complaint was brought 21 years after the disputed Domain Name was registered, without any explanation about the substantial delay in filing. While such delay was not sufficient, per se, to deny the Complaint, the Panel found that it did not help the Complainant’s case when combined with the additional factors discussed above. In the Panel’s opinion, this appeared to be a case where the Respondent had registered the Domain Name in the early phase of the Internet and the trademark owner filed the Complaint many years after. The Complaint was therefore denied.

Given the above, the Panel also made a finding of Reverse Domain Name Hijacking (RDNH), which is defined in the UDRP Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The Panel held that the absence of evidence of any targeting precluded a finding of bad faith registration under any reasonable interpretation of the UDRP. Hence, the Panel concluded that the Complaint should never have been brought because, even in the absence of a Response, it would likely have failed.

This decision shows that trademark owners have no superpowers when it comes to the UDRP. The Policy was intended to protect trademark owners in clear cut cases of cybersquatting, in other words domain name registrations made with the intention of profiting from the goodwill and reputation of a brand owner. The UDRP does not give each and every trademark owner carte blanche to ask for the transfer of a domain name incorporating its trademark. Complainants should therefore think seriously about filing a complaint under the UDRP without strong evidence of bad faith. They should also be very thorough when compiling their evidence to make sure that their narrative fits the requirements of the Policy.

The full decision is available here.

 

Legitimate interests behind passive holding

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of a passively-held domain name on the grounds that the Respondent had successfully demonstrated his bona fide preparations to use this domain name and the lack of targeting of the Complainant at the time of registration.

The Complainant was Rimjhim Hada, based in India, who claimed to operate his business under his mark AACHHO, registered in India in September 2018. The Complainant also held a number of domain names incorporating the term AACHHO or its misspelling, all of which redirected to his website at http://www.aachho.com/. His earliest domain name registration was for aachho.com, registered in August 2016.

The Respondent was Ajay Gupta from KPC International based in India who claimed to be engaged in a wedding-related business. He applied for his Indian trademarks in the term AACHO in January 2021 claiming use since 2014 and, after he was notified by WIPO of this dispute proceeding, filed trademark cancellation actions against the Complainant’s Indian trademarks in March 2021.

The Domain Name aacho.com was registered by the Respondent in September 2014. At the time when the complaint was filed, it simply pointed to a parked page and was offered for sale by the Respondent.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

As far as the first limb was concerned, the Complainant contended that he held a registered trademark in the term AACHHO since September 2018 and submitted additional evidence to support his common law rights and goodwill under this mark prior to 2018. According to the Complainant, the Domain Name consisted of a misspelling of his trademark, which should not prevent a finding of confusing similarity under the Policy. The Respondent stated that the Domain Name corresponded to his common law rights in the AACHO trademark, which was adopted in 2013 and used commercially since 2014.

The Panel pointed out that the Complainant’s lack of registered trademark rights prior to the registration of the Domain Name was irrelevant to the assessment on confusing similarity. Since the Domain Name consisted of a misspelling of the Complainant’s trademark (i.e., the letter “h” was missing), it was considered to be confusingly similar to the trademark in question. The first limb was therefore satisfied.

With regard to the second limb, the Complainant submitted that the Respondent had never actively used the Domain Name and had no intention to do so in future. The Respondent contended that he was working on the development and content of the website associated with the Domain Name and provided evidence not only on his adoption of the AACHO trademark in 2013 but also the recognition that he had gained as a wedding planner under this mark since 2014. The Respondent further argued that he was entitled to maintain the Domain Name or to offer it for sale.

Given that none of the evidence provided by the Complainant on his unregistered trademark rights in the term AACHHO predated 2018 while the Domain Name was registered in 2014, the Panel found that the Complainant had not made out a prima facie case that the Respondent lacked rights or legitimate rights in the Domain Name. On the contrary, the Panel was of the view that the documents submitted by the Respondent convincingly proved that he was genuinely engaged in a wedding-related business under this mark since 2014. Furthermore, in the Panel’s opinion, the fact that the Respondent had initiated cancellation proceedings before the Indian Trademark Registry against the Complainant’s AACHHO trademark was in furtherance of the Respondent’s efforts to establish rights in his AACHO mark. The second limb was therefore not satisfied and the Complaint was dismissed.

For the sake of completeness, the Panel continued to examine the third requirement under the Policy. As far as the third limb was concerned, the Complainant contended that the Respondent’s offer to sell the Domain Name at the price of 2,000,000 USD clearly showed that he had registered the Domain Name for unlawful commercial gain and thus in bad faith. He also argued that the non-use of the Domain Name should not prevent a finding of use in bad faith. The Respondent rebutted the Complainant’s arguments by stating that he registered the Domain Name with a view to establishing his presence online and that his offer to sell the Domain Name was not illegitimate per se.

The Panel highlighted that the Domain Name was registered before the Complainant acquired any rights in the term AACHHO and no evidence was submitted by the Complainant to establish that the Domain Name was registered in anticipation of trademark rights by the Complainant. The Panel therefore found that the registration of the Domain Name under such circumstances could not be held to be in bad faith. The Panel further underlined that, based on the evidence put forward by the Complainant, the Respondent may not have attempted to sell the Domain Name specifically to the Complainant for 2,000,000 USD, but instead offered it for sale to the public without quoting a price, and in any event the offer to sell a domain name consisting of dictionary words (the Panel noted that the term AACHHO meant “good” in a regional language in India) was not illegitimate in itself. The third limb was therefore not satisfied.

The Respondent’s lack of bad faith is clear in the present case where the Domain Name was registered before the Complainant acquired any registered or well-established common law trademark rights. The question may arise as to whether the Complainant filed this Complaint in bad faith or whether he simply over-estimated his chances of success by mistakenly believing that the passive holding of the Domain Name and the Respondent’s lack of any corresponding trademark would be sufficient to support his claims. In this sense, it is interesting to note that the Panel did not issue a finding of Reverse Domain Name Hijacking against the Complainant. In any event, this case once again illustrates why it is always important to conduct an initial assessment based on all factors and risks before filing any complaint under the UDRP.

The decision is available here.

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Hogan Lovells | Attorney Advertising

Written by:

Hogan Lovells
Contact
more
less

Hogan Lovells on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.